GIM 40: IP Disposition in Sponsored Programs

Transcript:GIM 40: IP Disposition in Sponsored Programs:
GIM 40: IP Disposition in Sponsored Programs December, 2024 MRAM Mike Snow, Proposal and Awards Team Manager Ari Santander, Proposal and Awards Team Manager Office of Sponsored Programs Executive Order 36 & GIM 40 EO 36 - Patent, Invention, and Copyright Policy: As a condition of employment, UW employees assign their interest in inventions (Intellectual Property) to the UW Employees report all inventions and discoveries to CoMotion Many non-federal sponsors want IP terms in sponsored research agreements. GIM 40 - Disposition of UW Intellectual Property in Sponsored Program Agreements: Sets out the UW’s position on IP rights in sponsored programs. EO 36 - Patent, Invention, and Copyright Policy GIM 40 - Disposition of UW Intellectual Property in Sponsored Program Agreements GIM 40 - Disposition of UW Intellectual Property in Sponsored Program Agreements UW IP is a state asset Disposition must be consistent with the UW’s academic and public mission Inventions first conceived or reduced to practice during the project by UW personnel are owned by the UW often referred to as “Project IP” UW may grant certain rights to the sponsor, depending on the relationship, the sponsor’s participation, and other factors GIM 40 - Disposition of UW Intellectual Property in Sponsored Program Agreements Rights that can be granted to a sponsor Project IP: Internal non-commercial use by sponsor An option to negotiate a non-exclusive (or exclusive) commercial license An option may be exclusive Background IP: IP already in existence at time project starts UW does not exclusively license background IP An option to a non-exclusive license to background IP is possible, but only to extent: necessary to practice Project IP It is available (i.e. not already encumbered) What we are seeing Rights to background IP To consider all IP as “jointly owned IP” by virtue of them funding the agreement One of the following: Deem all developed software or other IP to be open access only Exclusive use, via an upfront option to an exclusive commercial license or an upfront non-exclusive or exclusive commercial license Ownership ~ which is a “work for hire” model that is inappropriate for sponsored programs Other risk mitigation terms related to IP such as UW provides indemnification for third-party IP infringement Sponsors want… e.g. Time of Award & IP Terms Traditionally, OSP negotiates IP terms at the time of award. Negotiating IP terms can take time. Documenting Non-Standard IP Terms OSP uses an internal UW